Model IPR Support Services for SMEs

Part I

D. Rajendra Prasad
30 November 2010

Introduction

There has been a heightened interest for raising awareness about 'intellectual property' issues and their management in the SME sector all over the world in recent years. The genesis to this development lies in the realisation of the fact that there is significant discrepancy between SMEs' important contribution to the economy and their low use of the intellectual property system and that systematic efforts are required by policy makers and regulatory agencies to promote the use of the intellectual property (IP) system by SMEs. To fulfil these aspirations, the World Intellectual Property Organisation (WIPO), brought special focus on SMEs with respect to IPR by creating a SME Division since 2000.

The SME Division has since made pioneering efforts on various facets of these issues and ensured that member countries provide effective services to SMEs that encourages better use of IP system within their jurisdictions. The website of SME Division of WIPO provides details of services being offered in various countries in this area. These services range from best practices in awareness raising, training, professional advice, dedicated services, IPR enforcement and general helpdesk and are now being offered by complex array of agencies invariably in conjunction with other business support services and / or other academic renderings.

National Patent Offices in Europe along with other development agencies and academic institutions have shown great interest and enthusiasm in putting in place some kind of IP support systems for SMEs since the turn of this millennium, even though enforcement of IP is a major concern. With the plethora of all kind of IP support measures for SMEs mushrooming all over Europe with varying degrees of success and impact, the European Commission recently commissioned KM Forschung of Austria to carry out a benchmarking study of IP support systems across Europe and elsewhere. The final benchmarking report - a highly recommendable reference document for policy makers, also cautions the readers that the aim in the context of SMEs should ideally be on implementing a rational IPR strategy balancing formal and informal IP assets of the company instead of too heavily focussing on patent filings and regarding that as a true measure of innovation performance. The report, nonetheless, highlights the elements of innovative and good practices of public IP support in a number European and non-European countries.

Some of the best practices being adopted in this area from across the world as reported in the above reference and elsewhere are highlighted on a selective basis in this article.

Japan: The IPR Strategy and the Pledge for an IP Culture

Sheer magnitude of the efforts of Japan to pursue a national IPR strategy following a policy statement of Prime Minister Koizumi on February 4, 2002, the goal "…to become an intellectual-property based nation" to strengthen its global competitiveness creates a favourable environment for IPR usage with SMEs. To establish an IP culture in Japan, an Intellectual Property Strategic Programme is being pursued since 2003. JPO, the Japanese Patent Office provides comprehensive support through various measures to SMEs which are suitably integrated with venture capital firms that sustain the industrial foundation in Japan.

Traditionally, the Japanese innovation system has suffered from two phenomena, known popularly as i) donation system and ii) keiretsu system that have grave implications for promoting IPR culture in SME sector. The 'donation system' refers to the technology transfer operations taking place between university professors and large Japanese multinational corporations as a result of which big companies appropriated most of the university based inventions and discoveries through a system of endowments and assignments of patents. This direct and close relationship between large Japanese companies and the universities virtually leave no scope for SMEs to get any benefit of the new inventions. The 'keiretsu' system refers to long term collaboration and partnership between large firms and established SMEs, according to which the later produce goods on behalf of their larger counterparts. This makes it very difficult for new SMEs to enter the market.

Following the identification of these two main shortcomings in the Japanese innovation system with regard to IPR in the SME sector, state intervention was considered necessary. Thus an IP strategy designed by the "Intellectual Property Strategic Headquarters" has been especially set up for this purpose. A task force commissioned in 2005 by the IPR Headquarters elaborated on measures to promote the intellectual property strategies of small and medium-sized companies. The programme is stated to list as many as 450 support measures to address IPR usage and awareness in SMEs, in education, at universities and the general public.Some of the noteworthy services are described below:

Specific Support Services in Japan

Free consultation with Patent Information Advisors
The National Centre for Industrial Property Information and Training (INPIT) is said to depute Patent Information Advisors to various locations in response to requests from regional authorities for advising SMEs on exploitation of patent information through consultation meetings and workshops free of charge.

Support through Patent Licensing Advisors
INPIT also deputes patent licensing advisors, who are experts with a wealth of knowledge and experience on intellectual property rights and technology transfers, upon request from local governments and technology licensing organizations with the aim of patent licensing to SMEs and venture companies owned by universities, public research institutions, and companies.

Free Prior Art Searches for SMEs
In order to support proper assessment as to whether an examination should be requested or not, private searching organizations commissioned by the JPO perform prior art searches free of charge for patent applications of SMEs and individuals prior to requests for examination, upon request of the applicant, and deliver the search results by mail.

Fiscal Measures for SMEs in Patent Prosecution Process
JPO has designed a series of fiscal measures to support SMEs in the patent prosecution process, i.e.,

exemption or 50% reduction of examination request fees for individuals or companies, especially those dedicated to R&D.
accelerated examinations / accelerated appeal and trial examinations
exemption from or 50% reduction of the patent annual fees (from the first year to the third year)

Knowledge Dissemination
Japanese knowledge dissemination and awareness programme for IP management, especially aimed at SMEs is most comprehensive. Extensive support is provided in areas of human resources development activities related to intellectual property for local companies and SMEs, seminars for SMEs on strategic acquisition of intellectual property rights that meet regional needs etc.

Support from Development Banks to SMEs in the field of IPR
This support service extended by development banks in Japan stands out clearly as most notable which is not easily seen elsewhere. Their main activity area with respect to IPR is advice, valuation and acceptance of IPR as collateral in the credit business; however, different financial institutions employ different criteria and target different customer groups (e.g., SMEs, individuals etc.). Some of the well known banks active in this line of service are as follows:

Development Bank of Japan
Okinawa Development Finance Corporation
National Life Insurance Corporation
Shoko Chukin Bank Network
Japan Finance Corporation for Municipal Enterprises

IPR Support Services for SMEs in South Korea

Free Patent Management Services for SMEs
In December, 2000, the Korean Intellectual Property Office (KIPO) and the Korea Patent Attorneys Association (KPAA) signed a business cooperation agreement to initiate a partnership to offer free patent management services from pre-filing to registration. Currently, more than 700 patent agents throughout Korea provide free consultation services to SMEs which satisfy the necessary conditions as a "SME" stipulated by Korean law. (http://www.kpaa.or.kr)

Fee Reductions for Small and Medium-sized Enterprises
According to the Fee Regulation approved from time to time, KIPO also provides fee reductions of up to 50% for SMEs and up to 70% for micro enterprises as defined by the Korean law to encourage IP creation & acquisition activities.

Free Education on Patent Information Systems to Patent Applicants
To promote further utilization of patent information and to enhance its services for the general public including SMEs, KIPO provides applicants with free education on the patent information search system through 'Patent/Utility Model Search System' at KIPO's offices in Seoul and Daejon which was designed originally for in-house use of the KIPO Examiners.
A new internet based service, 'Korea Industrial Property Rights Information Service (KIPRIS)' has also been now launched allowing remote searches of all IP related systems, such as patent, utility model, design, and trademark from (http://www.kipo.go.kr) and also from the Korea Industrial Property Rights Information Center (KIPRIC) (http://www.kipris.or.kr), an affiliate of KIPO.
Free lectures, contact and practice-oriented education programmes on patent information search are also provided by KIPO patent examiners and KIPRIC experts.

Internet Patent Technology Market (http://www.patentmart.or.kr)
provides an information database of domestic patents, to facilitate on-line transactions of patented technologies. A bimonthly Patent Mart Journal is also brought out on available technologies particularly based on patents for commercialization.

Other Services
In addition to the above, there are several other activities organised by different institutions in the development sector with their regional offices. These are in the nature of i) IPR Acquisition Campaign for SMEs, ii) Guidebooks, iii) IP Information and Digital Library, iv) Patent Analysis and Mapping Service.

Denmark's Patent and Trademark Office (DKPTO)

DKPTO has a unique distinctive customer service orientation, as all support services start with assessment of the needs of SME target groups. These services relate mainly to patents, utility models, trademarks and designs. DKPTO is stated to have transformed itself from a traditional Patent Office concerned with receiving and registering patent information to one that actively promotes the business exploitation of intellectual property, both directly and in co-operation with a range of other agencies.

The service approach and pro-active marketing of customer support seems to be the result of the basic requirement for the DKPTO to be self-financing. The organisation is in a strong position to develop new services, particularly those relating to IPR enforcement.

DKPTO now operates more like a business outfit with a clear mission and vision statements and poses itself as natural choice of business partner. DKPTO provides a number of professional services, particularly for information and support services An English-language website offers an international service. Basic information products are provided for free, while more advanced and tailored services are provided at a charge. On-line searching facility of a range of IPR databases is offered free of charge.

Key Services of DKPTO

Access for IPR professionals
Services specifically tailored to individual clients make use of the expertise of DKPTO staff for novelty analysis, validity analysis, technical state-of-art analysis etc.

Training Programmes
Extensive training programmes are being offered by DKPTO to enterprises in a variety of forms as workshops and seminars at various places in Denmark, viz., DKPTO's headquarters and regional offices, incubators, innovation centres, technological institutes, universities, business schools etc. and often in association with partner institutions. Course material can be delivered on-line or can be tailored for in-house delivery on the enterprise's own premises.

IPR Enforcement
The Danish Government, through DKPTO, has made the fight against piracy and counterfeiting a major priority and effective steps are being taken with effect from 2008 with DKPTO staff having particular responsibility for enforcement matters as well.

Some of the other core services of DKPTO for its customers via its dedicated website include the following:

IP Watch
A service for regular surveillance of desired technology areas, activity of competitors etc. is provided through an online tool dubbed as 'IP Survey'. It helps searching through electronic database of patents that is updated regularly. The user can set up his personal access through his login id and can analyse all collected patents in his archive and can also add desired keywords, labels and comments on the individual patent references.

IP Response
A management tool developed by DKPTO available free of charge to its regular customers that helps test their company's work with regard to IP. The online test takes the users through 20 questions concerning various aspects of their work with IPR. Based on the answers, it generates a report with an overview of efforts of the company of the users with suggestions on how to improve further.

IP-Marketplace
This is one of the latest facilities launched on the website in September 2007 that helps enterprises to buy and sell patents, arrange licensing and find business partners.